Table of Content
Introduction
A patent is a right granted to an inventor by the Government in exchange for a complete disclosure of the innovation. The inventor receives exclusive rights to the patented process, design, or invention for a set length of time. A patent is a type of an intangible asset. An invention is patentable if it meets the required legal standards that govern the process of granting a patent within the context of a national or multilateral body of law.
35 U.S.C. § 101 – “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
By extension, patentability refers to the substantive requirements for a patent to be considered valid, not to formal requirements such as "sufficiency of disclosure," "unity of invention," or "best mode requirement.” Patentability is one part of a patent examiner's formal review of a patent application, and it can be tested in post-grant patent litigation.
In order to be patentable, an invention must usually meet the following criteria:
Novelty : The term "patentable subject matter" refers to a type of subject matter that is suitable for patent protection (i.e., at least some aspect of it must be new which is referred to as “novelty” of the patent)
Non-Obvious/Inventive : In the United States, a patent must be non-obvious or entail an inventive step in European patent law.
Industrial Application : Useful (as defined by US patent law) or capable of industrial application (in European patent law)
How to find Novelty of a Patent using PAIR?
All the information regarding a patent, including, but not limited to patentability and novelty, is available on the Patent Application Information Retrieval (PAIR). The Patent Application Information Retrieval (PAIR) is a web-based service provided by the United States Patent and Trademark Office (USPTO) launched in February 2015 that allows you to view the status and documents of your patent applications in a safe, simple, and secure manner. PAIR uses conventional web-based panels to allow users to check the status and status of pending patent applications within minutes of sending them to the USPTO. It may be used to securely verify the status of pending patent applications at any time.
Public PAIR and Private PAIR are the two PAIR applications. Public PAIR gives you access to patents that have been issued and applications that have been published. Using a registered USPTO government account, Private PAIR allows secure real-time access to pending application status and history. The Public PAIR is open to anyone; however, a user must meet the following criteria to gain access to the Private PAIR:
have a customer number,
have a registered USPTO.gov account, or be a sponsored practitioner support user;
be a registered patent attorney/agent, an independent inventor, or a person granted limited recognition;
Private PAIR
A user can go to https://www.uspto.gov/patents/apply/checking-application-status/check-filing-status-your-patent-application access both Public and Private PAIR. As discussed, users can get access to Public PAIR without any need to have an account. On the other hand, a user needs to have an account to access Private PAIR constitutes the information regarding the patent applications that are not revealed to the public and what information is already present in the Public PAIR. A typical login page of Private PAIR looks like this:
1. Search by Customer Number
Customers can use the Private PAIR system to search for Applications by Customer Number, Applications with Status Changes, study Outgoing Correspondence, and view or amend Customer Number Details after logging in. Customers can acquire corresponding results by selecting the appropriate Customer Number from the dropdown list by selecting the radio button adjacent to the desired category and then clicking the Search button. Here is an example of what a typical page looks like:
The search results will show a list of all the applications connected with the given Customer Number that match the search criteria.
2. Search by Application Number
Customers can also search by Application number, Control number, Patent number, PCT number, or Publication number for a single instance at a time.
The requested application's detailed details will be displayed. The numerous Tabs give the user access to information regarding that particular application. (Tabs appear only if data for that item is available.)
Public PAIR
A user can retrieve relevant patent-related information that is published publicly on the Public PAIR portal. A user can go to the Public PAIR website using this link: Public Pair - Public Pair. After logging in, the user can access patent-related information by entering the patent's details, such as the Application Number, Patent Number, Control Number, PCT Number, Publication Number, and International Design Registration Number, and then selecting the "Search" button. The results will be shown relevant to a particular patent after clicking on the “Search button”, as shown below:
The window will have information tabs such as Application Data, Transaction History, Image File Wrapper, Patent term adjustment, Continuity Data, Fees, Published documents, Assignments, and Display References.
Let’s have a look at the tabs and the information provided under those tabs:
“Application Data” - The bibliographic data of the searched patent is included in the Application Data.
“Transaction History” - The Transaction History data provides the user with all types of transactions, whether verbal, technical or financial, between an inventor and the USPTO.
“Image File Wrapper” - The Image File Wrapper contains all the documents related to the communication between the inventor and the USPTO in the form of Office Actions. An Office Action (OA) is a letter from the patent examiner requesting a properly signed written answer from the applicant in order for the application to be prosecuted further.
The file wrapper contains office actions that an inventor(s) and the patent examiner had gone through during the process of a patent prosecution. This tab is important to various IP professionals as it contains key aspects of the patent. An IP professional can find crucial facts regarding patent prosecution, including, but not limited to, claim modifications, rejections, arguments regarding rejections, modifications to overcome rejections, and notice of allowance. Usually, the novel aspect of the patent can be determined by a careful perusal of notice of allowance as it describes why a patent is granted, overcoming all the rejections. Suppose the reason is not mentioned in notice of allowance. In that case, a user can read previous rejection documents to infer the reasons for rejection. The modifications and arguments made to the claim(s) to overcome the rejections can be identified, which contains the novel aspect of the patent. The user must go through all the documents said above, especially arguments, before landing on a notice of allowance. In this way, a user can understand the invention and the novel aspect of the patent.
When it comes to rejections by the patent examiner, during the patent prosecution process, the 'Double Patenting' rejection is very common. "Double patenting occurs when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents," according to the USPTO, and "The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent." A patent is rejected in a Double Patenting rejection because the invention in the patent was disclosed in a previously issued patent whose term had expired, and the 'Doctrine of Double Patenting' precludes this.
The inventor can submit a 'Terminal Disclaimer' to avoid the Double Patenting denial. "A terminal disclaimer (TD) is a statement submitted by a patent owner in which the owner disclaims or dedicates the entire term, or terminal part of the term, of the patent issued to the public," according to the USPTO. When a claim(s) in a current application would have been obvious in light of at least one claim in an earlier-filed issued patent, a disclaimer is often filed. To put it another way, when an applicant makes a terminal disclaimer in a pending application to avoid a non-statutory double patenting rejection, the applicant declares that the issuing patent will have the same term as the previously issued patent and that both patents will be owned by the same person. If the same person does not own both parents simultaneously, the patent(s) may be declared unenforceable. Following a terminal Disclaimer form sample:
“Patent Term Adjustment” - The Patent Term Adjustment data discloses information on communication between the inventor and the USPTO regarding Patent Term Adjustment, i.e., the patent's lifetime. A patent is generally valid for 20 years from the date of filing. It also contains information if there is a discrepancy in the patent term during the patent prosecution. A classic example of a disparity that causes the patent term to be changed is when the examiner rejects the patent and the inventor takes no further action, resulting in the patent being abandoned. Another instance of a disparity is when a project was abandoned/rejected owing to non-payment of the fee.
“Continuity Data” - Continuity Data refers to information regarding applications that were filed in response to a parent application.
“Published Documents” - The Published Documents reveals the information regarding published documents, i.e., granted patent and publication file before a patent gets granted.
“Assignments” - The Assignments tab displays details on all patent assignments. A patent assignment is a legal procedure that permits an investor to transfer patent ownership to a business (if any). Although ownership of a patent can be transferred to numerous companies/organizations, the patent's inventors remain the same. With the transfer of ownership/assignee, the rights to a certain invention are also transferred. In addition, if any patent is brought before a court of law, the present assignee will be held accountable for the judgement (royalties earned while licensing or infringement litigation). An assignee may also change during the course of a patent application or after the patent has been issued.
“Display Reference" - The Display Reference tab shows all the references used in publishing and granting the patent.
References
